Appeal No. 1998-0941 Page 12
Application No. 08/226,660
not entitled to the safeguard of 35 U.S.C. § 121, third sentence,
against an "obviousness-type" double patenting rejection.
Schneller disclosed an invention relating to a wire clip
having three elements (A, B, and C) known in the prior art, the
combination ABC, and two features (X and Y) which he had invented
that could be used separately, ABCX or ABCY, or in combination,
ABCXY. Schneller acknowledged the best mode of his invention
used the two features (X and Y) in combination, i.e., ABCXY. The
claims of the patent were directed to a wire clip comprising BCX
and ABCX. Schneller voluntarily filed a division claiming wire
clips comprising ABCY and ABCXY.
The subject matter ABCXY was fully disclosed as the best
mode and was "covered" by the patent claim ABCX (since this claim
had "comprising" language that did not exclude other structure).
The court concluded that "[t]he claims on appeal, which are
directed to the combinations ABCY or ABCXY, would therefore
continue protection on the preferred embodiment of the invention,
ABCXY, disclosed in the patent, beyond the expiration date of the
patent," id. at 355, 158 USPQ at 215.
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